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[email protected] Paper No. 8 571-272-7822 Entered:September 12, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
NHK SPRING CO., LTD., Petitioner,
v.
INTRI-PLEXTECHNOLOGIES, INC.,
Patent Owner.
Case IPR2018-00752
Patent 6,183,841 B1
Before CHRISTOPHER M. KAISER, ELIZABETHM. ROESEL, and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
ANKENBRAND, AdministrativePatent Judge.
DECISION
Denying Institution of Inter Partes Review 35 U.S.C. § 314(a)
IPR2018-00752 Patent 6,183,841 B1
I. INTRODUCTION
NHK Spring Co., Ltd. (“Petitioner”) requests an inter partes review of
claims 1, 4, 7, and 10 of U.S. Patent No. 6,183,841 B1 (“the ’841 patent,”
Ex. 1001). Paper 1 (“Pet.”). Intri-PlexTechnologies, Inc. (“Patent Owner”)
timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
Based upon the particular circumstances of this case, we exercise our
discretion under 35 U.S.C. §§ 314(a) and 325(d) and do not institute an inter
partes review of the challenged claims.
II. BACKGROUND
A. Related Matters
The parties identify Intri-Plex Technologies, Inc. v. NHK
International Corp., 3:17-cv-01097-EMC (N.D. Cal.) as a related matter
under 37 C.F.R. § 42.8(b)(2). Pet. 2; Paper 4, 2.
B. The ’841 patent
The ’841 patent, titled “Optimized Low Profile Swage Mount Base
Plate Attachment of Suspension Assembly for Hard Disk Drive,” issued on
February 6, 2001, based on an application filed April 21, 1998. Ex. 1001,
[22], [45], [54]. The ’841 patent relates to a base plate for attaching a
suspension assembly to an actuator arm in a hard disk drive. Id. at Abstract.
The base plate includes a flat flange portion and a cylindrical hub portion.
Id. at 3:41–42. The base plate has several parameters, including a base plate
thickness (TBP), hub overall height (HH), hub inner diameter (DID), base plate
length (LBP), base plate width (WBP), hub outer diameter (DOD), hub inner
surface depth (HIS), base plate opening diameter (DBP), hub radial width
(WH, which is (DOD - DID)/2), and a hub counter bore depth (HCB). Id. at
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IPR2018-00752 Patent 6,183,841 B1
3:48–55, 4:3–18. The ’841 patent states that “[t]he optimum parameters . . .
are such as to satisfy the following equation:”
𝑊 𝑊𝐻 𝐻 · ≥ 5
)⁄2𝑇𝐵𝑃 (𝐻𝐼𝑆 + 𝐻𝐻 − 𝐻𝐶𝐵
Id. at 3:56–63. The calculation on the left-hand side results in a Geometry
Metric Value (id. at 4:18), and the equation is satisfied when the Geometry
Metric Value is less than or equal to five (id. at 3:60).
The ’841 patent provides a table, reproduced below, that compares an
exemplary inventive base plate to a prior art base plate.
Id. at 4:3–18. The table above sets forth the dimensions of the parameters
that form the prior art and inventive base plates, and the Geometry Metric
Value that results for each after applying the values for WH, TBP, HIS, HH,
and HCB to the equation. According to the table, the dimensions of the prior
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IPR2018-00752 Patent 6,183,841 B1
art base plate result in a Geometry Metric value of 3.308, which does not
satisfy the equation, whereas the dimensions of the exemplary inventive base
plate result in a Geometry Metric Value of 7.810, which satisfies the
equation. Id.
According to the ’841 patent, a base plate with parameters that satisfy
the equation has several advantages, including that it reduces gram load
change inherent in swaging and allows a large retention torque in “low hub
height configurations that offer limited retention torque in a standard hub
geometry.” Id. at 2:27–30. The ’841 patent also states that such a base plate
eliminates the neck region associated with prior art base plates that was
known to result in bending moment decoupling of the hub and flange. Id. at
4:23–65, Figs. 3, 4.
C. Illustrative Claim
Claim 1 is independent and illustrative of the claimed subject matter.
Claim 1 recites:
1. An optimized low profile base plate for attachment of a suspension assembly to an actuator arm in a hard disk drive comprising:
a flange having a flange thickness (TBP); and,
a hub having, a hub height (HH), a hub radial width WH, a land height hub inner surface depth (HIS), and a lead in shoulder hub counter bore height (HCB);
wherein:
𝑊𝐻 ·
𝑊𝐻 ≥ 5
(𝐻𝐼𝑆 + 𝐻𝐻 − 𝐻𝐶𝐵)⁄2𝑇𝐵𝑃
Ex. 1001, 5:41–53.
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IPR2018-00752 Patent 6,183,841 B1
D. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1, 4, 7, and 10 of the
’841 patent based on the following grounds:
Reference(s) Statutory Basis Claims Challenged
Braunheim1 § 102(e) 1, 4, 7, 10
Braunheim § 103 1, 4, 7, 10
Braunheim and Applicant Admitted Prior Art (AAPA)2
§ 103 1, 4, 7, 10
Pet. 4. Petitioner relies on the Declaration of David B. Bogy, Ph.D.
(Ex. 1002) to support its asserted grounds of unpatentability. Patent Owner
disputes that Petitioner’s asserted grounds renders any of the challenged
claims unpatentable. See generally Prelim. Resp.
III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner, citing Dr. Bogy’s testimony, asserts that a person of
ordinary skill in the art at the time of the invention of the ’841 patent “would
have had at least a Bachelor’s degree in mechanical engineering, with at
least two years of work and/or academic experience in the design and/or
study of disk drive components.” Pet. 4 (citing Ex. 1002 ¶ 13).
At this stage of the proceeding, Patent Owner does not dispute
Petitioner’s assertion regarding the level of ordinary skill in the art, which
1 U.S. Patent No. 5,689,389, filed Jan. 22, 1996, and issued Nov. 18, 1997 (Ex. 1003).
2 Petitioner relies on the dimensional values set forth for the parameters of
the base plate in the ’841 patent’s table that are described as typical prior art dimensions. See, e.g., Pet. 15 (“Ground 3 (Braunheim in view of AAPA) is non-cumulative [to Grounds 1 and 2] because AAPA expressly specifies a ‘typical’ prior art value for the flange thickness (TBP).”).
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IPR2018-00752 Patent 6,183,841 B1
we adopt for purposes of this decision. Further, based on the information
presented at this stage of the proceeding, we consider Petitioner’s declarant,
Dr. Bogy, qualified to opine from the perspective of an ordinary artisan at
the time of the invention. See Ex. 1002 ¶¶ 3–11 (Dr. Bogy’s background
and qualifications), Attachment A (Dr. Bogy’s curriculum vitae).
B. Claim Construction
For an unexpired patent, the Board interprets claims using the
“broadest reasonable construction in light of the specification of the patent.”
37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2144–46 (2016). In this proceeding, however, Patent Owner filed a Motion
for District Court-TypeClaim Construction (Paper 6), in which it certified
under 37 C.F.R. § 42.100(b) that the ’841 patent would expire within 18
months of March 13, 2018 (i.e., the entry of the Notice of Filing Date
Accorded to Petition). Paper 6, 2. Petitioner agrees that the claims of the
’841 patent should be interpreted “similar to that of a District Court’s
review.” Pet. 11–12. Because the ’841 patent will expire before we would
enter a final written decision, we find that district court-type claim
construction, rather than broadest reasonable construction, applies to this
proceeding. See In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340–42 (Fed.
Cir. 2016) (“[C]onsistent with our prior precedent and customary practice,
we reaffirm that once a patent expires, the PTO should apply the Phillips
standard for claim construction.”); Black & Decker, Inc. v. Positec USA,
Inc., 646 Fed. App’x 1019, 1024 (Fed. Cir. 2016); see also Amendments to
the Rules of Practice for Trials before the Patent Trial and Appeal Board, 81
Fed. Reg. 18,750, 18,750 (Apr. 1, 2016) (amending 37 C.F.R. § 42.100(b) to
allow a district court-style claim construction approach “for claims of
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IPR2018-00752 Patent 6,183,841 B1
patents that will expire before entry of a final written decision”). Under the
district court standard, claim terms “are generally given their ordinary and
customary meaning,” which is the “meaning that the term would have to a
person of ordinary skill in the art . . . at the time of the invention” when read
“in the context of” the specification and prosecution history of the patent.
Phillipsv. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc)
(internal quotation marks and citation omitted).
For purposes of this proceeding, Petitioner adopts the parties’ agreed-
upon constructions from the related district court litigation. Pet. 13–14.
Patent Owner does not dispute the agreed-upon constructions, which Patent
Owner notes the district court has adopted. Prelim. Resp. 21. Patent Owner
contends, however, that claim construction is not necessary to resolve the
parties’ dispute at this stage of the proceeding. Id. at 22. We determine that
no claim term requires express construction to resolve any controversy at
this stage of the proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
that are in controversy, and only to the extent necessary to resolve the
controversy.”).
C. Asserted References
Before turning to the parties’ arguments, we provide a brief summary
of the asserted references.
1. Braunheim (Ex. 1003)
Braunheim discloses a low profile swage mount for connecting a disk
drive actuator arm to the load beam of a head suspension assembly.
Ex. 1003, Abstract. The swage mount includes a base plate formed on one
side with an opening and a hollow hub disposed on the opposite side. Id.
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IPR2018-00752 Patent 6,183,841 B1
“The hub is formed with an inner swaging surface having a diameter
approximating the diameter of the base plate opening to give the swage
mount torq[u]e retention characteristics comparable to conventional swage
mounts much larger in size.” Id.
Braunheim discloses a number of parameters for the swage mount,
including a base plate thickness (TBP), hub overall height (HH), hub inner
diameter (DID), base plate length (LBP), base plate width (WBP), hub outer
diameter (DOD), hub inner surface depth (HIS), base plate opening diameter
(DBP), and hub radial width (WH). Id. at 6:34–49 (Table 1). Table 1 of
Braunheim, which is reproduced below, provides approximate dimensions
for all of the parameters of a preferred embodiment of the swage mount.
TABLE 1
SYMBOL NAME DIMENSION (MM)
LBP Base Plate Length 5.080
WBP Base Plate Width 5.080 TBP Base Plate Thickness 0.203 DBP Base Plate Opening Diameter 2.312 DID Hub Inner Diameter 2.083 DOD Hub Outer Diameter 2.731 HH Hub Overall Height 0.145 HIS Hub Inner Surface Depth 0.094 WH Hub Radial Width 0.648
Id. at 6:37–49. According to Braunheim, “by adhering to particular
dimensional relationships” between the parameters, the swage mount “may
be reduced in size to exhibit a vertical profile nowhere anticipated in the art
while maintaining torque retention of magnitudes comparable to much larger
swage mount profiles.” Id. at 6:4–10. In particular, Braunheim describes
the relationship between the base plate opening diameter (DBP) and the hub
inner diameter (DID) and the relationship between hub height (HH) and hub
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IPR2018-00752 Patent 6,183,841 B1
inner surface depth (HIS) as providing the advantages to its disclosed swage
mount. Id. at 6:11–33, 7:29–34.
Braunheim further explains that although the base plate thickness
(TBP) “is on the order of 0.20 millimeters,” it “may be reduced further in
accordance with the present invention.” Id. at 5:28–31. Braunheim
describes the relationship that exists between the hub wall radial thickness
and the base plate thickness, id. at 3:15–18, 30–31, and states that the
invention overcomes the conventional assumption that “the hub can be no
thicker than the base plate thickness” by maintaining the relationships
between DBP and DID, and HH and HIS, id. at 7:41–52.
2. Applicant Admitted Prior Art (“AAPA”)
Petitioner relies on the dimensional values set forth for the parameters
of the base plate in the ’841 patent’s table that are described as typical prior
art dimensions. Ex. 1001, 4:3–18. In particular, for its first ground––
anticipation based on Braunheim––Petitioner points to the “typical” known
hub counter bore height (HCB) of 0.038 mm from the ’841 patent’s table.
See, e.g., Pet. 22. For its second ground––obviousness over Braunheim––
Petitioner, in an alternative application of Braunheim, relies on the 0.038
value for HCB from the ’841 patent’s table. See id. at 43–45. Also for its
second ground, and for its third ground (obviousness over Braunheim in
view of the AAPA), Petitioner directs us to the “typical” prior art base plate
thickness (TBP) of 0.150 mm from the ’841 patent’s table. See, e.g., id. at
40–41 (obviousness over Braunheim in view of the knowledge of the person
of ordinary skill in the art), id. at 46 (obviousness over Braunheim in view of
the AAPA).
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IPR2018-00752 Patent 6,183,841 B1
D. Petitioner’s Challenges to the ’841 Patent
Petitioner contends that claims 1, 4, 7, and 10 of the ’841 patent are
unpatentable as anticipated by Braunheim, obvious over Braunheim alone,
and obvious over Braunheim in view of the AAPA. See Pet. 15–50. In
brief, Petitioner argues that Braunheim anticipates the challenged claims
because, once supplemented to include a typical AAPA value for HCB, or
pursuant to Braunheim’s own suggestions (for TBP), Braunheim discloses a
base plate having dimensions that satisfy the equation recited in the
challenged claims. See, e.g., Pet. 15–26 (claim 1). In addition, Petitioner
argues that the challenged claims would have been obvious over Braunheim
because reducing HCB or TBP would have been within the knowledge of the
ordinary artisan. See id. at 37 (relying on anticipation analysis for reduction
of TBP), id. at 42–46 (asserting that the AAPA as background knowledge
would have led the skilled artisan to reduce HCB with a reasonable
expectation of success in achieving a Geometry Metric Value of ≥ 5). In
addition, Petitioner contends that the challenged claims would have been
obvious over Braunheim in view of the AAPA because the AAPA expressly
specifies a “typical” prior art value for TBP. See id. at 46–49. In all three
grounds, Petitioner relies on the parameters set forth in Braunheim’s Table 1
and directs us to the typical prior art dimensions for HCB and TBP set forth in
the ’841 patent’s table. See supra § II.B.2.
Patent Owner contends that Braunheim does not anticipate the
challenged claims and that the challenged claims would not have been
obvious over Braunheim or the combination of Braunheim and the AAPA.
Prelim. Resp. 39–54. First, however, Patent Owner contends that we should
exercise our discretion under 35 U.S.C. § 325(d) to deny institution. Id. at
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IPR2018-00752 Patent 6,183,841 B1
22–36. Patent Owner argues that we should deny institution under § 325(d)
because “the Petition simply repackages and restyles arguments made by the
Examiner and overcome by [Patent Owner] during prosecution of the
application that led to the grant of the ’841 patent and that are being
simultaneously asserted by Petitioner in the District Court case.” Id. at 4.
Patent Owner also argues that we should deny institution under § 314(a)
because Petitioner filed the Petition shortly before the time-bar under
§ 315(b) expired and because proceeding in parallel with the district court
litigation is an inefficient use of our time and resources. Id. at 36–39. For
the reasons explained below, we agree with Patent Owner and exercise our
discretion under 35 U.S.C. §§ 314(a), 325(d) to deny institution.
1. Discretion Under 35 U.S.C. § 325(d)
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
permitted, but never compelled, to institute an IPR proceeding”). Section
325(d) gives us express discretion to deny a petition when “the same or
substantially the same prior art or arguments previously were presented to
the Office.” 35 U.S.C. § 325(d). In evaluating whether to exercise our
discretion under Section 325(d), we weigh the following non-exclusive
factors: “(a) the similarities and material differences between the asserted
art and the prior art involved during examination; (b) the cumulative nature
of the asserted art and the prior art evaluated during examination; (c) the
extent to which the asserted art was evaluated during examination, including
whether the prior art was the basis for rejection; (d) the extent of the overlap
between the arguments made during examination and the manner in which
Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
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IPR2018-00752 Patent 6,183,841 B1
(e) whether Petitioner has pointed out sufficiently how the Examiner erred in
its evaluation of the asserted prior art; and (f) the extent to which additional
evidence and facts presented in the Petition warrant reconsideration of prior
art or arguments.” Becton, Dickinson & Co. v. B. Braun Melsungen AG,
IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017)
(informative).
We analyze these factors below as they apply to the record in this
proceeding, and find that, on balance, the factors weigh in favor of
exercising our discretion under 35 U.S.C. § 325(d). We also decide, for
reasons explained below, that an additional factor supports denying
institution under § 314(a).
(a)The similaritiesand material differences between the asserted art and
the prior art involved during examination
As explained above, Petitioner relies on Braunheim as anticipating
claims 1, 4, 7, and 10, and Braunheim, as well as Braunheim and the AAPA
for its arguments that claims 1, 4, 7, and 10 would have been obvious. Pet.
4. As Petitioner acknowledges, the Examiner considered Braunheim and the
AAPA during prosecution of the ’841 patent. Id. at 7 (“The primary
reference (Braunheim) in the proposed grounds of this Petition was applied
by the Examiner during prosecution of the ’841 patent.”), 8–9 (explaining
that the Examiner relied on “a side-by-side comparison of a ‘typical’
embodiment’s dimensions versus ‘typical’ prior art dimensions admitted by
the ’841 [p]atent”); see also Ex. 1001, [56] (listing Braunheim among the
References Cited); Ex. 1004, 47, 67 (rejecting all pending claims for
obviousness over “applicant’s admission of the state of the prior art in the
table [in the ’841 patent specification] . . . in view of Brooks . . . (U.S.
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IPR2018-00752 Patent 6,183,841 B1
5,717,545) and Braunheim (U.S. 5,689,389)”). Thus, the Examiner
considered the prior art that Petitioner asserts here.
(b)The cumulativenature of the asserted art and the prior art evaluated during examination
As explained above, Petitioner relies on the same prior art that the
Examiner considered during prosecution of the ’841 patent. Because it is the
same, we need not address whether the AAPA and Braunheim are
cumulative of the art that the Examiner considered.
(c)The extent to which the asserted art was evaluated during examination, includingwhether the prior art was the basis for
rejection
As Patent Owner points out, the Examiner cited Braunheim and the
AAPA, along with Brooks, during examination to reject all pending claims
for obviousness in the initial Office Action and the Final Office Action. See
Prelim. Resp. 25–26; Ex. 1004, 47 (initial Office Action), 67 (Final Office
Action). In those rejections, the Examiner relied on the AAPA dimensions
for each of the parameters listed in the ’841 patent’s table. See, e.g.,
Ex. 1004, 47–48. The Examiner explained that the AAPA dimensions for
HCB and WH were the only AAPA dimensions that differed from the
dimensions recited in the claims. Id. at 49. The Examiner concluded that a
person of ordinary skill in the art would have increased HCB based on the
teachings in Brooks and would have increased slightly WH based on
Braunheim’s disclosure. Id. at 48–49.
In other words, the Examiner (1) started with the AAPA dimensions
for the base plate parameters, and (2) increased or decreased dimensions for
certain parameters (i.e., HCB and WH) in the equation recited in the claims
based on the prior art teachings in Brooks and Braunheim in order to arrive
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IPR2018-00752 Patent 6,183,841 B1
at the optimized relationship recited in the claims, i.e., a Geometry Metric
Value of ≥ 5. See id. at 47–49. Accordingly, we find that the Examiner
evaluated Braunheim and the AAPA during examination and substantively
applied their teachings to reject the ’841 patent’s claims.
(d)The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior
art or Patent Owner distinguishes the prior art
Although Petitioner argues to the contrary, we determine that the
findings the Examiner made during prosecution and the arguments Petitioner
makes here are substantially the same. As discussed above, Petitioner
contends Braunheim anticipates the challenged claims by pointing to the
dimensions Braunheim discloses for most of the base plate parameters and
by relying on the value for HCB that the AAPA discloses. For its
obviousness grounds, Petitioner relies on Braunheim’s dimensions, as well
as the typical values for HCB and TBP that the AAPA discloses.
Petitioner, anticipating Patent Owner’s argument under § 325(d),
contends that it relies on Braunheim “in an entirely different manner” than
the Examiner relied on Braunheim during prosecution. Id. at 7–8. In
particular, Petitioner contends that the asserted grounds “rely primarily on a
base plate exemplified in Braunheim (Table 1) and using the metric formula
of the challenged claims to ‘calculate a metric value’ from its dimensions,”
whereas the Examiner omitted a metric value calculation “and instead
rel[ied] on a side-by-side comparison of a ‘typical’ embodiment’s
dimensions versus ‘typical’” AAPA dimensions set forth in the ’841 patent.
Id. at 8–9; see also Ex. 1002 ¶¶ 39, 41 (Dr. Bogy’s testimony to the same
effect).
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IPR2018-00752 Patent 6,183,841 B1
We disagree. Patent Owner argues persuasively that the Petition
“simply applies the same references in the opposite order.” Prelim. Resp.
33–34. As explained above, in rejecting the claims, the Examiner started
with the AAPA base plate dimensions from the ’841 patent’s table and
modified two of them (including WH) based on Braunheim to arrive at a
value for the metric equation of ≥ 5. Ex. 1004, 47–48. Here, Petitioner
starts with Braunheim’s base plate dimensions, including WH, and either
supplements those dimensions with HCB as disclosed by the AAPA or
modifies the value for TBP based on the AAPA. For example, in arguing that
Braunheim anticipates the challenged claims, Petitioner directs us to the
parameters Braunheim’s Table 1 discloses for a base plate (e.g., TBP, WH,
HIS, and HH). Pet. 21. Because Braunheim does not disclose HCB, Petitioner
uses the “‘typical’ known HCB admitted by the ’841 Patent”—0.038 mm. Id.
at 22. Similarly, in arguing that Braunheim and Braunheim in view of the
AAPA would have rendered the challenged claims obvious, Petitioner relies
on the values in Braunheim’s Table 1 for all of the parameters in the metric
equation except TBP. See, e.g., id. at 37 (referring back to anticipation
argument). Petitioner then directs us to the “‘typical prior art” TBP of 0.150
mm set forth in the ’841 patent’s table. Id. at 40, 47.
Thus, Petitioner’s analysis here is substantially the same as the
Examiner’s during prosecution: both rely upon prior art values for base
plate parameters and conclude that the ordinary artisan would have modified
certain of the values for parameters in the metric equation to achieve the
relationship of ≥ 5 that is recited in the claims.
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IPR2018-00752 Patent 6,183,841 B1
(e)Whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art
Petitioner contends that the Examiner “overlooked” Braunheim’s
Table 1 and that “[h]ad the Examiner considered the Braunheim base plate
and applied its dimensions to the claimed metric formula, the claims would
not have been allowed.” Pet. 8, 11. The flaw in Petitioner’s argument,
however, is that none of Petitioner’s asserted grounds relies solely on
Braunheim’s Table 1 values. Rather, as previously explained, Petitioner
relies on Braunheim’s Table 1 for some of the parameters of the metric
equation recited in the challenged claims and relies on the AAPA for other
parameters. See, e.g., Pet. 22, 40, 47. Petitioner, therefore, does not point
out sufficiently how the Examiner erred in evaluating the asserted prior art.
(f) The extent to which additional evidenceand facts presented in the Petitionwarrant reconsiderationof prior art or arguments
For the reasons discussed in subsection (d) above, we find that
Petitioner’s arguments substantially overlap the Examiner’s findings during
examination. Petitioner explains that the Petition presents declaratory
evidence—Dr. Bogy’s declaration—that the Office did not consider during
examination. Pet. 7. Although Dr. Bogy’s declaration was not before the
Examiner, the declaration does not persuade us that we should reconsider
Braunheim, the AAPA, or Petitioner’s arguments because the declaration is
substantially similar to the Petition (i.e., contains the same arguments that
we find substantially overlap the Examiner’s findings)3 and Dr. Bogy fails to
3 Although Dr. Bogy’s declaration is substantially similar to the Petition in
most respects, Dr. Bogy’s testimony differs from the Petition with regard to HCB. For Ground 1, Petitioner contends that Braunheim anticipates an HCB
value that satisfies the metric equation recited in the claims. Pet. 15–23.
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IPR2018-00752 Patent 6,183,841 B1
support his testimony with objective evidence. For example, Dr. Bogy
testifies that one of ordinary skill in the art would have changed certain
values of Braunheim’s base plate parameters based on the AAPA and
suggestions in Braunheim. See, e.g., Ex. 1002 ¶¶ 54–61, 62–65. But
Dr. Bogy fails to explain why a change in the value of one parameter would
not have affected the other parameters of Braunheim’s base plate, including
DBP, DID, HH, and HIS, which Braunheim identifies as having “unexpected
relationship[s] deemed critical to the successfuloperation of the swage
mount.” Ex. 1003, 6:11–33; see also id. at 7:29–31 (“Important advantages
result from constructing the swage mount . . . with the aforedescribed
relationships between DBP and DID, and between HH and HIS.”); id. at 7:49–
52 (“[B]y maintaining the aforedescribed relationships between DBP and DID,
and HH and HIS, the profile of the swage mount . . . may be greatly reduced
while still maintaining sufficient torque retention for fastening the actuator
arm to the load beam.”).
Further, as support for adjusting the value of TBP from that disclosed
in Braunheim’s Table 1 to something less than 0.145 mm, Petitioner argues
that “[t]he only lower limit to [TBP] suggested by Braunheim is the hub
height (HH).” Pet. 25 (citing Ex. 1003, 2:59–60, 7:41–43 (“[T]he hub can be
no thicker than base plate thickness.”)). Dr. Bogy offers similar testimony in
that regard. Ex. 1002 ¶¶ 63, 65. Absent from Petitioner’s analysis and
Dr. Bogy’s testimony, however, is a persuasive reason why the skilled
artisan would have understood Braunheim’s disclosure of TBP as the upper
But Dr. Bogy testifies that “one of ordinary skill in the art would have found it obvious to include an HCB of 0.038 mm [the AAPA HCB] in Braunheim’s base plate.” Ex. 1002 ¶ 58; see id. ¶ 61.
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IPR2018-00752 Patent 6,183,841 B1
limit for hub thickness to necessarily disclose the converse—i.e., that hub
thickness is the upper limit for TBP. Moreover, Petitioner and Dr. Bogy do
not explain why Braunheim’s disclosure of an upper limit for hub thickness
means hub height, HH, as opposed to hub radial thickness, WH, in view of
Braunheim’s disclosure that a relationship exists between WH and TBP. See
Ex. 1003, 3:30–31 (disclosing relationship between WH and TBP). Rather,
Petitioner and Dr. Bogy simply presume that Braunheim’s disclosure that
“the hub can be no thicker” than TBP refers to HH not WH. Pet. 25; Ex. 1002
¶ 63 (“Specifically, because ‘the hub can be no thicker than the [base plate]
thickness,’ the lower limit for the [base plate] thickness (TBP) is the hub
height (HH).”).
Given the foregoing, we are not persuaded that we should reconsider
Braunheim or the arguments Petitioner presents in the Petition.
2. Weighing the 325(d) Factors
Taking into account the above factors, we find that the factors weigh
in favor of exercising our discretion and denying institution under § 325(d).
Importantly, the asserted art is a subset of the same prior art that the
Examiner applied in rejecting the claims during prosecution. Further, the
arguments Petitioner advances in its Petition are substantially similar to the
findings the Examiner made to reject the claims, and that Patent Owner
overcame. Thus, we deny institution under § 325(d). Although a weighing
of the § 325(d) factors alone is sufficient to support an exercise of our
discretion to deny institution, we also consider Patent Owner’s additional
arguments under § 314(a).
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3. Discretion under § 314(a)
Patent Owner contends that two additional factors weigh in favor of
denying institution under § 314(a). First, Patent Owner argues that
Petitioner knew about the ’841 patent for more than 10 years, yet provides
no explanation for why it waited so long to file the Petition. Prelim. Resp.
37–38. We are not persuaded that this lapse in time favors denying review.
As Patent Owner acknowledges, Petitioner filed the Petition shortly before
the one-year bar in 35 U.S.C. § 315(b) expired. The Petition, therefore, was
timely, and Patent Owner does not apprise us of any tactical advantage, or
opportunity for tactical advantage, that Petitioner gained by waiting to file
the Petition. Thus, we find this proceeding distinguishable from the facts in
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case
IPR2016-01357 (Paper 19) (PTAB Sept. 6, 2017) (precedentialas to
§ II.B.4.i) (“General Plastic”)—the decision on which Patent Owner relies
to support its argument regarding the timing of the Petition.
Second, Patent Owner argues that instituting an inter partes review
“ultimately would be inefficient,” given the status of the district court
proceeding between the parties. Prelim. Resp. 38–39. In particular, Patent
Owner directs us to the Scheduling Order in the district court proceeding,
which sets a trial date of March 25, 2019. Id. at 39. Patent Owner further
notes that because the ’841 patent has expired, we will apply the same
standard for claim construction as the district court (which already has
construed the ’841 patent claim terms). Id. at 38. Patent Owner also
represents that Petitioner relies on the same prior art (Braunheim and the
AAPA) and arguments in its district court invalidity contentions as asserted
in the Petition. Id. at 1. Thus, Patent Owner argues, the district court
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proceeding will analyze the same issues and will be resolved before any trial
on the Petition concludes. Id. at 39. Patent Owner asserts that such
inefficiency supports denying the Petition.
We agree. First, we note that there is no “intent to limit discretion
under § 314(a), such that it is . . . encompassed by § 325(d).” Gen. Plastic,
Paper 19, 18–19. Thus, simply because we exercise our discretion to deny
the Petition under § 325(d) does not mean that we cannot consider and
weigh additional factors that favor denying institution under § 314(a).4
Second, Patent Owner argues persuasively that instituting a trial under the
facts and circumstances here would be an inefficient use of Board resources.
The district court proceeding, in which Petitioner asserts the same prior art
and arguments, is nearing its final stages, with expert discovery ending on
November 1, 2018, and a 5-day jury trial set to begin on March 25, 2019.
Ex. 2004, 1. A trial before us on the same asserted prior art will not
conclude until September 2019. Institution of an inter partes review under
these circumstances would not be consistent with “an objective of the
AIA . . . to provide an effective and efficient alternative to district court
litigation.” Gen. Plastic, Paper 19, 16–17. Accordingly, we find that the
advanced state of the district court proceeding is an additional factor that
weighs in favor of denying the Petition under § 314(a).
4 Indeed, the August 2018 Update to the Office Patent TrialPractice Guide,
83 Fed. Reg. 39,989 (Aug. 13, 2018) (“Trial Practice Guide Update”), invites parties to address additional factors that may bear on the Board’s discretionary decision to institute or not institute under §§ 314(a) and 325(d). TrialPractice Guide Update 11, 13.
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IV. CONCLUSION
Taking account of the information presented in the Petition and the
Preliminary Response, and the evidence of record, we exercise our
discretion under §§ 314(a) and 325(d) and deny institution. Accordingly, the
Petition is denied, and no trial is instituted.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.
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PETITIONER:
William Mandir [email protected]
John Rabena [email protected]
Yoshinari Kishimoto [email protected]
Fadi Kiblawi [email protected]
PATENT OWNER:
James Haley [email protected]
Joshua Van Hoven [email protected]
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